Benger Laboratories Limited v. RK Laros Company

• Decision Date: 29 May 1963
• Docket Number: No. 14219,14220.,14219
• Citation: 317 F.2d 455
• Parties: BENGER LABORATORIES LIMITED, a Corporation of Great Britain, Plaintiff, v. R. K. LAROS COMPANY, Now Pharmachem Corporation, a Pennsylvania Corporation, Defendant-Counterclaimant-Appellant, and Cutter Laboratories, a California Corporation, Intervenor-Defendant-Appellant, v. ARMOUR AND COMPANY, an Illinois Corporation, Counterclaim-Defendant.
• Court: U.S. Court of Appeals — Third Circuit

317 F.2d 455 (1963)

BENGER LABORATORIES LIMITED, a Corporation of Great Britain, Plaintiff, v. R. K. LAROS COMPANY, Now Pharmachem Corporation, a Pennsylvania Corporation, Defendant-Counterclaimant-Appellant, and Cutter Laboratories, a California Corporation, Intervenor-Defendant-Appellant, v. ARMOUR AND COMPANY, an Illinois Corporation, Counterclaim-Defendant.

Nos. 14219, 14220.

United States Court of Appeals Third Circuit.

Argued May 9, 1963.

Decided May 29, 1963.

Stanton T. Lawrence, Jr., Pennie, Edmonds, Morton, Barrows & Taylor, New York City (Morgan, Lewis & Bockius, Philadelphia, Pa., Pennie, Edmonds, Morton, Taylor & Adams, W. Brown Morton, Jr., Robert J. Kadel, New York City, of counsel, on the brief), for appellants.

Charles J. Merriam, Merriam, Smith & Marshall, Chicago, Ill. (Hayward H. Coburn, Philadelphia, Pa., Jerome B. Klose, Chicago, Ill., Drinker, Biddle & Reath, Philadelphia, Pa., on the brief), for plaintiff-appellee.

Timothy L. Tilton, Chicago, Ill., Edward W. Mullinix, Philadelphia, Pa. (Dawson, Tilton, Fallon, Lungmus & Alexander, Chicago, Ill., Schnader, Harrison, Segal & Lewis, Philadelphia, Pa., on the brief), for appellee Armour & Co.

Before McLAUGHLIN and FORMAN, Circuit Judges, and COOLAHAN, District Judge.

PER CURIAM.

In this patent infringement suit Judge Kirkpatrick in a comprehensive, sound opinion¹ held plaintiff's patent to be valid, that its reissue was proper, that it had been infringed by defendant's product and that its licensing arrangements did not violate the antitrust laws. The court found that plaintiff's product claims 1 to 5 inclusive and 12 presented a new, unexpected and important result by using dextran as a complexing agent for ferric hydroxide for the purpose of safely injecting the product intramuscularly. It said:

"That the admittedly old steps of the process would result in obtaining such a solution of dextran were the carbohydrate used could not but have been obvious to a skilled worker in the field, but that is all that was obvious. What was not obvious was that the solution produced would be intramuscularly injectable, and the discovery that it would have this unexpected and unpredictable property qualifies it as patentable."

See Application of Larsen, 292 F.2d 531 (C.C.P.A.1961).

With respect to defendant's contentions that plaintiff failed to state the best method of carrying out its invention and was not entitled to reissue of its patent, the trial court rightly concluded from the evidence as a whole that at the time of the American application there was a real question as to which was the best method; that there was sufficient disclosure, good faith and no concealment on the part of the plaintiff. Upholding the reissue the court found correctly from the evidence that "The plaintiff's explanation as to the way in which Example 3 came to be omitted from its American application is in my judgment entirely credible and...